September 12, 2007

Self-Examination

The
USPTO has released its
Examination Support Document (ESD) Guidelines, prerequisite under the new
examination regime for any applicant daring to "present more than five
independent claims or more than twenty-five total claims in an application."
It's shocking to think anyone would need so many claims; they must be inventing
something.

Applicant may present more than five
independent claims or more than twenty-five total claims in an application,
if applicant files an examination support document (ESD) in compliance with
37 CFR 1.265 before the first Office action on the merits of the
application. See 37 CFR 1.75(b)(1).

37 CFR 1.265(a) provides that an ESD
must include the following:

1. Preexamination Search Statement:
a statement that a preexamination search in compliance with 37 CFR 1.265(b)
was conducted, including an identification of the field of search by United
States class and subclass and the date of the search, where applicable, and,
for database searches, the search logic or chemical structure or sequence
used as a query, the name of the file or files searched and the database
service, and the date of the search;

2. Listing of References Deemed
Most Closely Related: a listing of the reference or references deemed
most closely related to the subject matter of each of the claims (whether in
independent or dependent form) in compliance with 37 CFR 1.265(c);

3. Identification of Claim
Limitations Disclosed by References: for each reference cited, an
identification of all the limitations of each of the claims (whether in
independent or dependent form) that are disclosed by the reference;

4. Detailed Explanation of
Patentability: a detailed explanation particularly pointing out how each
of the independent claims is patentable over the cited references; and

5. Showing of Support under 35
U.S.C. 112, ¶1: a showing of where each limitation of each of the claims
(whether in independent or dependent form) finds support under the first
paragraph of 35 U.S.C. 112 in the written description of the specification.
If the application claims the benefit of one or more applications under
title 35, United States Code, the showing must also include where each
limitation of each of the claims finds support under the first paragraph of
35 U.S.C. 112 in each such priority or benefit application in which such
support exists.

ESD represents unto itself a very
thorough examination, far more formally rigorous than any analysis any examiner
has ever done. As one wag quipped, "Not sure why we would need examiners anymore.
Perhaps that's the idea."

ESD is a formula for risking inequitable conduct if a relevant prior art
reference is found post-grant. As the patent office has acknowledged, only
statutory change proffers the prospect of relief on that score.

Comments

How exactly is there a risk of inequitable conduct. People seem to be saying this but not explaining why.

Posted by: MJC at September 12, 2007 11:55 PM

The potential for inequitable conduct arises for ESD because the applicant accepts the obligation to search and disclose relevant prior art. If, during an enforcement attempt, prior art is found that is materially relevant, that should have been uncovered and disclosed in an ESD search, then the patentee reasonably faces an assertion of inequitable conduct for not disclosing the prior art. Usually, the hurdle for proving inequitable conduct is intent. In this instance, intent is inherent in the applicant agreeing to the conditions of employing an ESD for examination.

The patent office has acknowledged the problem, and prefers a statutory change, but it’s not their problem, so they don’t really care.